Trademark Filing in Malaysia
A Trademark registered in India will not protect the trademark in a foreign country. Trademarks are territorial, its protection valid only within the borders of the territory/country where they are obtained registration. Therefore, Trademarks are valid only in the country where it has been recorded and is not valid worldwide by default. However, you can file for registration separately in individual countries.
Below is the procedure for filing Trademark in Malaysia:
The procedure for Trademark Registration in Malaysia is similar to that of the Trademark registration in India.
STEP 1: The 1st step for Registering Trademark in Malaysia is SEARCH (same as that of India) and the search can be made for checking the availability of Trademark in Malaysia on the official portal of Intellectual Property Corporation of Malaysia (website: www.myipo.gov.my).
STEP 2: It involves the filing of Application for Trademark Registration under Form TM5 (in India Trademark Application is filed under Form TM-A). This Form includes the same details as that of Indian Application form for Trademark Filing like: Details of the Applicant, Trademark, goods/ services description (as per the Malaysia Nice system for classification of mark which has 34 classes for goods and 11 for services, can be checked on the official portal of Malaysia mentioned above) and amount to be paid for Filing the application which is RM370 per application and in Indian Currency it is Rs. 6,270.
STEP 3: After filing the application for the Trademark registration the next step is the examination to be conducted by the Examiner/ Registrar of Malaysia to verify whether it complies with all legal requirements for registration (for instance, whether your marks fall into a category which is excluded from registration on absolute grounds and whether your mark is in conflict with any prior mark on the Trade Marks Register in the relevant or related class(es)).MyIPO will thereafter issue either an acceptance letter (Form TM29) or an objection letter (Form TM70). It is to be noted here, that Malaysia also has similar grounds (Relative and Absolute) for objecting to the registration of the Trademark as that of India.
STEP 4: If no objection is been raised by the Registrar/ Examiner then the Trademark is published in the Government Gazette of Malaysia but unlike India Malaysia, Trademark Registry charges Prescribed fees for the publishing the Trademark accepted in the official Gazette.And in case of any Objection raised the concerned applicant is required to file the reply for the said objection within 2 months in order to overcome the objections and if the objection is maintained after MyIPO has considered your response, you can apply for a hearing to put forward your case before the Hearing Officer who shall decide on your application.
STEP 5: Once the application is been accepted by the Registry and published in the official Gazette there is two months (In India it 4 months) for anyone who wishes to oppose your registration. If there is no opposition within the prescribed period, or if an opposition is overcome, your mark will be entered in the Trade Marks Register and a certificate of registration will be issued to you.
The initial registration is valid for 10 years from the date of application and can be renewed from time to time after paying the prescribed renewal fees. The time taken for the registration of a trademark in Malaysia, from the filing date to the issuance of the certificate, is about 20 Weeks for a smooth application. The time will be longer in case any objection to your mark is been raised on absolute and/or relative grounds or if application opposed by the 3rd Party.